DETAILED CATION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 7/17/26, claims 1-12 are currently pending in the application, with claim 10 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objection
Claim 1 is objected to because of the following:
Claim 1 recites the following limitations:
- “PMMA, a homopolymer, a copolymer, or mixture thereof of methyl methacrylate” and
- “which is the ratio of the moduli G” and G’”.
Although the claim does not rise to the level of indefiniteness under 112(b) in view of the disclosure, the first limitation may be amended to recite “PMMA as a homopolymer or a copolymer of methyl methacrylate”. The second limitation should be amended to recite “ G” to G’ ”, to remove any ambiguity on the direction in the ratio relationship.
Appropriate corrections and/or clarifications are requested.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-9, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Berdin et al. (2019/0062545 A1, of record).
Regarding claims 1-4, 11 and 12, Berdin teaches an antistatic composition comprising, based on the total weight of the composition, 55% to 99.9% by weight of methyl methacrylate homo- /copolymer (PMMA), and 0.1% to 45% by weight of at least one block copolymer (PEBA) that contains polyamide (PA) block and a polyether (PE) block. Berdin teaches copolymers of methyl methacrylate (at least 70% by weight), and of a (co)monomer, preferably, an alkyl acrylate in which the alkyl group contains 1 to 4 carbon atoms (0.3 to 30 % by weight), having a mass average molecular mass of more than 50,000 and preferably, 100,000 g/mol or more (Ab., [0031]-[0036], [0074]-[0076], ref. claims).
Berdin is silent on a composition comprising poly(methyl methacrylate) having claimed loss factor tan d.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching on a composition comprising a methyl methacrylate (co)polymer (55% to 99.9% by weight) comprising methyl methacrylate units and alkyl acrylate units with 1 to 4 carbon atoms in the alkyl group (0.3 to 30 % by weight), and at least one block copolymer (PEBA), it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an antistatic composition comprising methyl methacrylate (co)polymer and a (block) copolymer within the scope of Berdin, including those that fall within the scope of the claimed invention. Additionally, a skilled artisan would reasonably expect Berdin’s methyl methacrylate (co)polymers of overlapping scope having same structural units in same amounts as that of the claimed invention to have the claimed tan d, absent evidence to the contrary.
Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. In re Best, 195 USPQ 430, 433 (CCPA 1977). When there is sound basis for believing that the products of the Applicant and the prior art are the same, the Applicant has the burden of showing that they are not. In re Spada, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1990). When the prior art discloses all limitations of a claim except a property or function, and the Examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, basis exists for shifting the burden of proof to the Applicant. In re Fitzgerald et al., 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980). See MPEP 2112-2112.02.
Regarding claim 5, Berdin teaches polyether blocks comprising alkylene oxide motifs obtainable from polyethylene glycol, polypropylene glycol, polytrimethylene glycol and/or polytetrahydrofuran, and mixtures thereof [0074]-[0075], thereby obviating a combination as claimed.
Regarding claims 6-8, Berdin teaches polyamide blocks and polyether blocks at 50 wt.% or more, thereby obviating the polyamide blocks and copolymers thereof [0057]-[0076].
Regarding claim 9, Berdin teaches compositions that do not contain an organic salt [0093].
Claims 1-9, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami (JP 05-287157A, machine translation attached herewith, cited in IDS dated 7/1/25).
Regarding claims 1-3, 11 and 12, Kawakami teaches an acrylic resin composition having excellent permanent antistaticity, comprising an acrylic resin (A) (70-97 wt.%) and a polyamide elastomer (3-30 wt.%) consisting of a polyether block and a polyamide block (Ab.). Disclosed genus of ingredient (A) includes polymethyl methacrylate homopolymer, and copolymers of methyl methacrylate with methyl, ethyl, propyl or butyl (meth)acrylates, including methyl methacrylate-ethyl acrylate copolymer [0013]. Kawakami additionally teaches that the acrylic resins may be produced my known methods, such as suspension, emulsion and bulk polymerization methods [0013].
Kawakami teaches examples comprising acrylic resins comprising methyl methacrylate and methyl acrylate units (B-1: 90:10 wt.% (DELPET 60N); B-4: 94:6 wt.% (DELPET LP-1); 97.5:2.5 (DELPET 80N)), and an acrylic resin comprising methyl methacrylate and ethyl acrylate units (85:15 wt.%) ([0070]-[0071], Table 1).
Kawakami is silent on a composition comprising poly(methyl methacrylate) having claimed loss factor tan .
As stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Given the teaching in Kawakami on a composition comprising methyl methacrylate (co)polymers (70-97 wt.%), such as copolymers of methyl methacrylate with methyl, ethyl, propyl or butyl (meth)acrylates [0013], and a polyamide elastomer (3-30 wt.%) consisting of a polyether block and a polyamide block, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an antistatic composition comprising methyl methacrylate (co)polymer and a polyamide elastomer within the scope of Kawakami, including those that fall within the scope of the claimed invention. Additionally, a skilled artisan would reasonably expect Kawakami’s methyl methacrylate (co)polymers of overlapping scope having same structural units in same amounts as that of the claimed invention to have the claimed tan d, absent evidence to the contrary. The discussion from the latter part of paragraph 8 above on properties of prior art products that are identical or substantially identical is incorporated herein by reference.
Regarding claims 4 and 5, Kawakami teaches polyoxyethylene residues [0010], in addition to other segments, such as polypropylene glycol and polytetramethyleneglycol [0012].
Regarding claims 6 and 7, disclosed polyamide segments that overlap in scope with those of the claimed invention, and a content thereof at 25-60 wt.% [0011], [0014]-[0015].
Regarding claim 8, Kawakami teaches polyamide elastomer comprising polyoxyethylene segments [0016]-[0017], and polyamide segments of overlapping scope [0011], [0014].
With regard to claim 9, Kawakami teaches a composition comprising (A) an acrylic resin, (B) a polyamide elastomer, and (C) 0-90 % by wt. of an electrolyte, i.e., a salt is optional (ref. claim 1).
Response to Arguments
Applicant’s arguments and the Affidavit dated 7/17/26 have been duly considered.
Applicant argues that the Office has not established inherency of the claimed tan d >10, that Applicant’s own Examples on PMMA 1 to PMMA 5 demonstrate that tan d is not inherently >10, and that tan d is not derivable based on the disclosure of Berdin although Berdin discloses MMA copolymers with similar monomer ratios and Mw.
Referring to the Affidavit, Applicant asserts that tan d is a dynamic rheological response parameter that depends on multiple factors, such as molecular weight distribution (not just Mw), chain architecture, long-chain branching content, entanglement density, polymerization method/conditions, distribution of comonomer along the chain and relaxation properties, and that two PMMAs having identical monomer composition and similar weight-average molecular weight can nevertheless exhibit materially different G' and G" values and therefore significantly different tan δ values.
Noting that tan δ is not inherently taught in Berdin, is not recognized as a result effective variable that is optimizable, Applicant submits that Berdin cannot legally or technically inherently teach the claimed tan δ and because there is no reason for one skilled in the art to modify Berdin in a manner to arrive at the claimed tan δ, the rejection is respectfully requested to be withdrawn.
In response, as an initial matter, it is noted that although the rejections in the non-final office action dated 1/20/26 stated “methyl methacrylate (co)polymers having same structural units in same amounts to inherently have the claimed tan δ, or in the alternative, reasonably expect the same to have the claimed tan δ”, the alternative inherency basis is deleted in the rejections presented herein above.
In response to the Declaration, Applicant’s attention is drawn to MPEP 716.01(c) according to which the Examiner must assess (1) the nature of the matter sought to be established; (2) the strength of any opposing evidence; and (3) the interest of the expert in the outcome of the case.
The data in the disclosure on PMMA copolymers and corresponding tan d values is shown below:
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234
682
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In this case the Declarant is seeking to establish that the examples demonstrate that copolymers within the scope of the claims have a tan d of > 10. To that end, although Declarant states that the tan d value depends on multiple factors, such as the molecular weight distribution, chain architecture, long-chain branching content, entanglement density, polymerization method/conditions, distribution of comonomer along the chain and relaxation properties of the methyl methacrylate copolymers, the general disclosure or the exemplified embodiments therein are totally silent on any of the these features or on polymerization methods/conditions for preparing the PMMA polymers. Additionally, when PMMA 1 and PMMA 2 (inventive) are compared to PMMA 3 and PMMA 4, a skilled artisan would reasonably infer that methyl methacrylate copolymers having units of MMA (89%) and EA (11%), and a Mw, at best, of (70-85K) provide for a loss factor tan d of, at best, 15-30, i.e., limited to specific copolymers and not reasonably representative of PMMA polymers within the scope of claim 1. The opposing evidence presented in the disclosure and claim 1 suggests the opposite is true, there is no evidence that the PMMA polymers within scope of claim 1 would have a loss factor tan d of 10 of more. Lastly, because the Declarant is also an inventor and therefore, would have an interest in the outcome of the case.
Berdin’s teachings and the features of inventive PMMA 1 and PMMA 2, as summarized the previous office actions, is presented below:
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296
900
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Given that Berdin’s copolymers may include units of MMA (70-99.7 wt.%) and ethyl acrylate (0.3 -30 wt.%), they overlap in the scope with the PMMA of claim 1 and with inventive PMMA 1 and PMMA 2. In addition, the general disclosure to Berdin teaches a mass average molecular mass (Mw) of more than 50,000 and preferably, 100,000 g/mol [0037] and overlaps in scope with those of inventive PMMA 1 and PMMA 2. It is further noted per instant disclosure page 5, the PMMA may have a weight-average molar mass of from 70000 g/mol to 160000 g/mol, and preferably from 70000 to 100000 g/mol (page 5).
Additionally, the alternative rejections rely on Kawakami reference wherein the examples teach acrylic resins comprising methyl methacrylate and methyl acrylate units (B-1, 90:10 wt.% -DELPET 60N); 94:6 wt.% -DELPET LP-1; B-2, 97.5:2.5 -DELPET 80N) and a copolymer of methyl methacrylate and ethyl acrylate units (85:15 wt.%). It is noted that DELPET 80N has a molecular weight of 100,000 (per evidence reference JP 2013029553 A), and Delpet™ 60N has a molecular weight of 90,000 (per JP 2008231244 A).
Thus, the disclosed methyl methacrylate copolymers in Berdin and Kawakami references overlap in scope with the claimed PMMA polymers. The rejections of record do not rely on tan d as being a result effective variable, and the Examiner has not proposed any modification of Berdin to arrive at the claimed tan δ. On the contrary, noting that instant disclosure addresses the no structural limitations, other than the scope of the monomer units, amounts thereof and the molecular weight of the PMMA polymers, because the prior art methyl methacrylate copolymers are of overlapping scope with PMMA polymers of claim 1, because the PMMA polymers encompassed by the claimed invention are of a broad scope whereas only two specific PMMA polymers on record satisfy the claimed tan d feature, the data on record is not reasonably representative of PMMA polymers of the claimed invention to overcome the applied art.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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